Thursday, July 12, 2012

Test Your TTAB Judge-Ability on this Appeal from a Section 2(d) Refusal

The PTO refused registration of the mark MUZZIE'S & Design (shown first below) for "retail clothing boutiques featuring young women's evening gowns, cocktail dresses and evening footwear and accessories ...," finding the mark likely to cause confusion with the registered mark MUZZYS in stylized form (second below) for "clothing, namely hats, shirts and jackets," and for "retail store ... featuring motorcycle parts and clothing manufactured by others." Applicant appealed, arguing that Registrant's clothing comprises motorcycle apparel, while its boutiques attract young women seeking formal attire. How do you think this came out? In re Muzzie's, Inc., Serial No. 85065751 (June 21, 2012) [not precedential].

Applicant emphasized the differences in spelling, and argued that its mark is "very feminine in appearance," whereas the cite mark "uses a completely different stylization that is quite masculine in nature ...." The Board was unmoved. It observed that the literal portion of a mark is normally accorded greater weight in the likelihood-of-confusion analysis, and here the literal portions are pronounced identically. That alone may suffice to support a Section 2(d) finding. Moreover, the Board agreed with the PTO that Applicant over-emphasized the differences in font, because consumers may believe that either applicant or registrant has expanded its business to include variations of its original mark.

As to the goods and services, the fact that Applicant restricted its services is irrelevant, since the "retail store" services of the cited registration are broad enough to encompass applicant's "retail clothing boutiques ...." Furthermore, based on third-party registration evidence submitted by the PTO, Applicant's class 25 clothing products are related to Registrant's retail store services.

Applicant pointed to Registrant's website, where the "hats, shirts and jackets" of the registration "all identify motorcycle related apparel sold to motorcycle enthusiasts," in contrast to Applicant's formal attire for young women. This reliance on extrinsic evidence to narrow the scope of Registrant's goods is, of course, improper. "The law is clear that the question of likelihood of confusion must be determined based on the identification of goods in the application and cited registration, regardless of what the record may reveal as to the actual nature of the goods, the particular channels of trade or the class of purchasers to which the goods are directed."

Finally, Applicant pointed to a now-cancelled registration that Applicant owned for the same mark for "retail clothing boutiques," asserting that the involved marks co-existed on the register for more than six years without any instances of confusion. The Board, however, pointed out once again that a cancelled registration is not entitled to any statutory presumptions, that the PTO and the Board are not bound by the prior decisions of another examining attorney once the registration has lapsed, and that in this ex parte context there is no opportunity for the registrant to be heard on the issue of actual confusion.

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2012.


At 8:20 AM, Blogger Frank said...

I think these marks could easily co-exist without confusion. The TTAB gives too little credit to consumers' ability to distinguish marks like this. I would appeal it.

At 11:59 AM, Anonymous Anonymous said...

I have always had, and will continue to have, disagreement with the "doctrine" that the prior coexistence with a cancelled registration should be given little or no weight. First, registrations can easily be cancelled due to inadvertence. Second, and more importantly, I feel that it is quite telling that not only a prior Examiner felt that the marks could coexist but so did the parties. It's really tantamount to a consent, which the Fed Cir and the TTAB both applaud.


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